A lot of the attention on the PRO-IP Act has been on Section 104's compounding of damages provision. And rightly so. However, I want to bring to light the issue of criminal enforcement of copyright infringement, and the changes this bill makes to remove the current requirement of registration-before-enforcement.
The DOJ has repeatedly (PDF) stated that this change to Title 17, §411 is only a “clarification,” and that the law already permits criminal enforcement without the registration prerequisite. That's simply not the case. I first refer you to the current law:
§ 411. Registration and infringement actions
(a) Except for an action brought for a violation of the rights of the author under section 106A(a), and subject to the provisions of subsection (b), no action for infringement of the copyright in any United States work shall be instituted until preregistration or registration of the copyright claim has been made in accordance with this title.
“No action” means exactly that, regardless of whether it's a civil or criminal proceeding. But don't take my word for it, let's look to the Second Circuit's United States v. Backer (134 F.2d 533) which backs this up. The Court interpreted the black letter of the statute, specifically what the word “action” means in §411:
The term 'action' used in this setting includes a criminal as well as a civil action.
The idea that this is this change is simply a “clarification” of the current law comes from Sect. 2 of DOJ's analysis of its model legislation (which is where much of HR 4279 comes).
In Section 2, although DOJ repeatedly uses the word “clarify,” it is not stating what the law is, but rather, how it thinks it should be. For example:
Although this formality has — and should have — certain consequences in civil cases, in criminal cases it should not.
Because prosecutors work for the public good, they should be able to institute an infringement prosecution even if the copyright has not yet been registered.
In the DOJ's own IP manual has some rather dubious reasoning for why criminal enforcement does not have a registration requirement. First, it refers to a 1922 Alabama case (United States v. Cleveland, 281 F. 249, 253 (S.D. Ala. 1922)) which deals not with criminal copyright enforcement, but instead non-commercial alcohol possession during prohibition. Then, it counters its own argument with the Backer case from above. It goes on to refer to a comment (hardly binding law) made in a Senate Judiciary Committee hearing, addressing the formalities of the Berne Convention. I haven't been able to actually reference the context of the comment just yet, but it's more than likely regarding how our current copyright law complies with Berne, rather than a statutory analysis of Sect. 411. After that, it refers to a footnote in the dissenting opinion of the Sony Betamax case–where Justice Blackmun refers to Sect. 506 of the Copyright Act:
§ 506(a) (liability for criminal copyright infringement; not conditioned on prior registration).
Which, of course, is a true statement because a work can be registered after the infringement to allow for criminal enforcement. But this footnote speaks to the potential liability of the infringer, not to whether an action to enforce the copyright can take place, like the DOJ seems to suggest.
In DOJ's next subsection of their IP Manual, which deals with liability for infringement committed prior to registration, it starts off by saying:
If a court requires registration, one question prosecutors may face is whether criminal charges may be based on infringement committed prior to registration.
What is the scenario under which a court could require registration to enforce a copyright if it weren't required by the copyright statute?
It boils down to this: there cannot be criminal enforcement of an unregistered copyright, but DOJ is saying there should be. It's a policy argument, not a statement of the law. It's not a clarification, it's a change to copyright law. The problem with this “clarification” business is that it's misleading. From conversations I've had with policy makers, this DOJ's clarification rhetoric has left them very confused about what kind of changes the DOJ is asking for, and what the impact of those changes are.
To further muddy the water, at the end of its analysis, DOJ says that regardless of whether this change is made to copyright law…
[t]he Department of Justice will, however, continue to advise federal prosecutors that the recommended course in most cases is to prosecute with a copyright registration in hand, both as a matter of public policy and as matter of practicality at trial, see 17 U.S.C. § 410(c).
Belt-and-suspenders approach. No problem with that. But if DOJ already plans on teaching their prosecutors to have copyright registrations in hand, why not be conservative and maintain the incentive to register. If the concern is really about being unable to enforce copyrights, the content industry already won that battle with pre-registration. And, if the work isn't registered or pre-registered before it's published and infringed, per Sect. 412 of the Copyright Act, the owner has a grace-period of one month after they've learned of the infringement to register.
The vast majority of owners of copyrighted works do not register, and in turn that makes it really tough when the time comes to find the work's rightful owner. That's the problem of orphan works. We should be doing everything we can to incentivize people to register their works, so they can be found. Let's not mess with those incentives.